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Emerald Garment mgt vs CA

Facts:

In 1981, H.D Lee Co., Inc., a foreign company, filed an opposition against the trademark
application of Emerald Garment. Allegedly, the trademark “Stylistic Mr. Lee” sought to be applied for by
Emerald Garment is too confusingly similar with the brand “Lee” which has for its variations “Lee
Riders”, “Lee Sures”, and “Lee Leens”. The Director of Patents as well as the Court of Appeals ruled in
favor of H.D. Lee Co.

ISSUE: Whether or not the decision of the Court of Appeals is correct.

HELD: No.

The Supreme Court considered that the trademarks involved as a whole and ruled that Emerald
Garment’s “STYLISTIC MR. LEE” is not confusingly similar to H.D. Lee’s “LEE” trademark. The trademark
“Stylistic Mr. Lee”, although on its label the word “LEE” is prominent, the trademark should be
considered as a whole and not piecemeal. The dissimilarities between the two marks become
conspicuous, noticeable and substantial enough to matter especially in the light of the following
variables that must be factored in.

First, the products involved in the case at bar are, in the main, various kinds of jeans. These are not your
ordinary household items like catsup, soysauce or soap which are of minimal cost. Maong pants or jeans
are not inexpensive. Accordingly, the casual buyer is predisposed to be more cautious and discriminating
in and would prefer to mull over his purchase. Confusion and deception, then, is less likely.

Second, like his beer, the average Filipino consumer generally buys his jeans by brand. He does not ask
the sales clerk for generic jeans but for, say, a Levis, Guess, Wrangler or even an Armani. He is,
therefore, more or less knowledgeable and familiar with his preference and will not easily be distracted.

Finally, in line with the foregoing discussions, more credit should be given to the “ordinary purchaser.”
Cast in this particular controversy, the ordinary purchaser is not the “completely unwary consumer” but
is the “ordinarily intelligent buyer” considering the type of product involved.

There is no cause for the Court of Appeal’s apprehension that Emerald Garment’s products might be
mistaken as “another variation or line of garments under H.D. Lee’s ‘LEE’ trademark”. As one would
readily observe, H.D. Lee’s variation follows a standard format “LEERIDERS,” “LEESURES” and
“LEELEENS.” It is, therefore, improbable that the public would immediately and naturally conclude that
petitioner’s “STYLISTIC MR. LEE” is but another variation under H.D. Lee’s “LEE” mark.

The issue of confusing similarity between trademarks is resolved by considering the distinct
characteristics of each case. In the present controversy, taking into account these unique factors, we
conclude that the similarities in the trademarks in question are not sufficient as to likely cause deception
and confusion tantamount to infringement.

Further, H.D. Lee failed to prove in court that it had prior actual commercial use of its “LEE”
trademark in the Philippines. H.D. Lee did show certificates of registrations for its brand but registration
is not sufficient. Actual use in commerce in the Philippines is an essential prerequisite for the acquisition
of ownership over a trademark pursuant to Sec. 2 and 2-A of the Philippine Trademark Law (R.A. No.
166).

A rule widely accepted and firmly entrenched because it has come down through the years is that actual
use in commerce or business is a prerequisite in the acquisition of the right of ownership over a
trademark.

It would seem quite clear that adoption alone of a trademark would not give exclusive right thereto.
Such right “grows out of their actual use.” Adoption is not use. One may make advertisements, issue
circulars, give out price lists on certain goods; but these alone would not give exclusive right of use. For
trademark is a creation of use. The underlying reason for all these is that purchasers have come to
understand the mark as indicating the origin of the wares. Flowing from this is the trader’s right to
protection in the trade he has built up and the goodwill he has accumulated from use of the trademark.
Registration of a trademark, of course, has value: it is an administrative act declaratory of a pre-existing
right.
Mirpuri vs CA

FACTS

Lolita Escobar applied with the Bureau of Patents for the registration of the trademark “Barbizon”,
alleging that she had been manufacturing and selling these products since 1970. private respondent
Barbizon Corp opposed the application in IPC No. 686. The Bureau granted the application and a
certificate of registration was issued for the trademark “Barbizon”. Escobar later assigned all her rights
and interest over the trademark to petitioner Mirpuri. In 1979, Escobar failed to file with the Bureau the
Affidavit of Use of the trademark. Due to his failure, the Bureau cancelled the certificate of registration.
Escobar reapplied and Mirpuri also applied and this application was also opposed by private respondent
in IPC No. 2049, claiming that it adopted said trademark in 1933 and has been using it. It obtained a
certificate from the US Patent Office in 1934. Then in 1991, DTI cancelled petitioner’s registration and
declared private respondent the owner and prior user of the business name “Barbizon International”.

ISSUE

Whether or not the treaty (Paris Convention) affords protection to a foreign corporation against a
Philippine applicant for the registration of a similar trademark.

HELD. Yes

The Court held in the affirmative. RA 8293 defines trademark as any visible sign capable of
distinguishing goods. The Paris Convention is a multilateral treaty that seeks to protect industrial
property consisting of patents, utility models, industrial designs, trademarks, service marks, trade names
and indications of source or appellations of origin, and at the same time aims to repress unfair
competition. In short, foreign nationals are to be given the same treatment in each of the member
countries as that country makes available to its own citizens. Nationals of the various member nations
are thus assured of a certain minimum of international protection of their industrial property.
MANZANO v CA

FACTS:

Angelita Manzano filed PPO an action for the cancellation of Letters Patent for a gas burner
registered in the name of respondent Melecia Madolaria who subsequently assigned the letters patent
to New United Foundry and Manufacturing Corporation (UNITED FOUNDRY, for brevity). Petitioner
alleged that (a) the utility model covered by the letters patent, in this case, an LPG gas burner, was not
inventive, new or useful; (b) the specification of the letters patent did not comply with the requirements
of Sec. 14, RA No. 165, as amended; (c) respondent Melecia Madolaria was not the original, true and
actual inventor nor did she derive her rights from the original, true and actual inventor of the utility
model covered by the letters patent; and, (d) the letters patent was secured by means of fraud or
misrepresentation.

Testifying for herself petitioner narrated that her husband Ong Bun Tua worked as a helper in
the UNITED FOUNDRY where respondent Melecia Madolaria used to be affiliated with from 1965 to
1970; that Ong helped in the casting of an LPG burner which was the same utility model of a burner and
that after her husband’s separation from the shop she organized Besco Metal Manufacturing (BESCO
METAL, for brevity) for the casting of LPG burners one of which had the configuration, form and
component parts similar to those being manufactured by UNITED FOUNDRY.

Petitioner presented two (2) other witnesses, namely, her husband Ong Bun Tua and Fidel
Francisco.

Private respondent, on the other hand, presented only one witness, Rolando Madolaria, who
testified, among others, that he was the General Supervisor of the UNITED FOUNDRY.

Director of Patents Cesar C. Sandiego denied the petition for cancellation and holding that the
evidence of petitioner was not able to establish convincingly that the patented utility model of private
respondent was anticipated.

Petitioner elevated the decision of the Director of Patents to the Court of Appeals which
affirmed the decision of the Director of Patents. Hence, this petition for review on certiorari.

ISSUE:

Whether the dismissal is proper where the patent applied for has no substantial difference
between the model to be patented and those sold by petitioner.

HELD:

The element of novelty is an essential requisite of the patentability of an invention or discovery. If a


device or process has been known or used by others prior to its invention or discovery by the applicant,
an application for a patent therefor should be denied; and if the application has been granted, the court,
in a judicial proceeding in which the validity of the patent is drawn in question, will hold it void and
ineffective. It has been repeatedly held that an invention must possess the essential elements of
novelty, originality and precedence, and for the patentee to be entitled to the protection the invention
must be new to the world.

However, The validity of the patent issued by the Philippine Patent Office in favor of private respondent
and the question over the inventiveness, novelty and usefulness of the improved model of the LPG
burner are matters which are better determined by the Patent Office. The technical staff of the
Philippine Patent Office composed of experts in their field has by the issuance of the patent in question
accepted private respondent’s model of gas burner as a discovery. There is a presumption that the
Office has correctly determined the patentability of the model and such action must not be interfered
with in the absence of competent evidence to the contrary.

The rule is settled that the findings of fact of the Director of Patents, especially when affirmed by the
Court of Appeals, are conclusive on this Court when supported by substantial evidence. Petitioner has
failed to show compelling grounds for a reversal of the findings and conclusions of the Patent Office and
the Court of Appeals. Petition DISMISSED
Kho vs CA

Facts:

Elidad Kho is the owner of KEC Cosmetics Laboratory and she was also the holder of copyrights
over Chin Chun Su and its Oval Facial Cream Container/Case. She also bought the patent rights over the
Chin Chun Su & Device and Chin Chun Su for medicated cream from one Quintin Cheng, who was the
assignee of Shun Yi Factory – a Taiwanese factory actually manufacturing Chin Chun Su products.

Kho filed a petition for injunction against Summerville General Merchandising and Company to enjoin
the latter from advertising and selling Chin Chun Su products, in similar containers as that of Kho, for
this is misleading the public and causing Kho to lose income; the petition is also to enjoin Summerville
from infringing upon Kho’s copyrights.

Summerville in their defense alleged that they are the exclusive and authorized importer, re-packer and
distributor of Chin Chun Su products; that Shun Yi even authorized Summerville to register its trade
name Chin Chun Su Medicated Cream with the Philippine Patent Office; that Quintin Cheng, from whom
Kho acquired her patent rights, had been terminated (her services) by Shun Yi.

Issue:

Whether or not petitioner is entitled to the exclusive use of the trademark Chin Chun Su based on her
copyright and patent registration over the product.

Held: NO.

Trademark, copyright and patents are different intellectual property rights that cannot be
interchanged with one another. A trademark is any visible sign capable of distinguishing the goods
(trademark) or services (service mark) of an enterprise and shall include a stamped or marked container
of goods. In relation thereto, a trade name means the name or designation identifying or distinguishing
an enterprise. Meanwhile, the scope of a copyright is confined to literary and artistic works which are
original intellectual creations in the literary and artistic domain protected from the moment of their
creation. Patentable inventions, on the other hand, refer to any technical solution of a problem in any
field of human activity which is new, involves an inventive step and is industrially applicable. Petitioner
has no right to support her claim for the exclusive use of the subject trade name and its container. The
name and container of a beauty cream product are proper subjects of a trademark inasmuch as the
same falls squarely within its definition.

In order to be entitled to exclusively use the same in the sale of the beauty cream product, the
user must sufficiently prove that she registered or used it before anybody else did. The petitioner’s
copyright and patent registration of the name and container would not guarantee her right to the
exclusive use of the same for the reason that they are not appropriate subjects of the said intellectual
rights. Consequently, a preliminary injunction order cannot be issued for the reason that the petitioner
has not proven that she has a clear right over the said name and container to the exclusion of others,
not having proven that she has registered a trademark thereto or used the same before anyone did.
Maguan vs. CA

FACTS:

Petitioner is doing business under the firm name and style of SWAN MANUFACTURING" while
private respondent is likewise doing business under the firmname and style of "SUSANA LUCHAN
POWDER PUFF MANUFACTURING.” Andholder petitioner informed private respondent that the powder
puffs the latter is manufacturing and selling to various enterprises particularly those in the cosmetics
industry, resemble Identical or substantially Identical powder puffs of which the former is a patent
holder under Registration Certification Nos. Extension UM-109, Extension UM-110 and Utility Model No.
1184; petitioner explained such production and sale constitute infringement of said patents and
therefore its immediate discontinuance is demanded, otherwise it will be compelled to take judicial
action Private respondent replied stating that her products are different and countered that petitioner's
patents are void because the utility models applied for were not new and patentable and the person to
whom the patents were issued was not the true and actual author nor were her rights derived from such
author. Petitioner filed a complaint for damages with injunction and preliminary injunction against
private respondent with the then Court of First Instance of Rizal The trial court issued an Order granting
the preliminary injunction prayed for by petitioner. Consequently, the corresponding writ was
subsequently issued. In challenging these Orders private respondent filed a petition for certiorari with
the respondent court but was denied. Hence this petition.

ISSUE:

Whether Maguan has a right to file an action before the CFI for injunction due to
infringement of her patent.

HELD:

When a patent is sought to be enforced, the questions of invention, novelty or prior use, and
each of them, are open to judicial examination.

Under the present Patent Law, there is even less reason to doubt that the trial court has
jurisdiction to declare the patents in question invalid. A patentee shall have the exclusive right to make,
use and sell the patented article or product and the making, using, or selling by any person without the
authorization of the patentee constitutes infringement of the patent (Sec. 37, R.A. 165). Any patentee
whose rights have been infringed upon may bring an action before the proper CFI now (RTC) and to
secure an injunction for the protection of his rights (Sec. 42, R.A. 165).

The burden of proof to substantiate a charge of infringement is with the plaintiff. But where the
plaintiff introduces the patent in evidence, and the same is in due form, there is created a prima facie
presumption of its correctness and validity. The decision of the Commissioner (now Director) of Patent
in granting the patent is presumed to be correct. The burden of going forward with the evidence
(burden of evidence) then shifts to the defendant to overcome by competent evidence this legal
presumption.

The question then in the instant case is whether or not the evidence introduced by private
respondent herein is sufficient to overcome said presumption. Respondent Court of Appeals was
satisfied that there is a prima facie showing of a fair question of invalidity of petitioner's patents on the
ground of lack of novelty. As pointed out by said appellate court said evidence appeared not to have
been considered at all by the court a quo for alleged lack of jurisdiction, on the mistaken notion that
such question is within the exclusive jurisdiction of the patent office. It has been repeatedly held that an
invention must possess the essential elements of novelty, originality and precedence and for the
patentee to be entitled to protection, the invention must be new to the world. Accordingly, a single
instance of public use of the invention by a patentee for more than two years (now for more than one
year only under Sec. 9 of the Patent Law) before the date of his application for his patent, will be fatal
to, the validity of the patent when issued.

SEC. 9. Invention not considered new or patentable. — An invention shall not be considered
new or capable of being patented if it was known or used by others in the Philippines before the
invention thereof by the inventor named in an application for patent for the invention; or if it was
patented or described in any printed publication in the Philippines or any foreign country more than one
year before the application for a patent therefor; or if it had been in public use or on sale in the
Philippines for more than one year before the application for a patent therefor; or if it is the subject
matter of a validity issued patent in the Philippines granted on an application filed before the filing of
the application for patent therefor.

Thus, more specifically, under American Law from which our Patent Law was derived it is
generally held that in patent cases a preliminary injunction will not issue for patent infringement unless
the validity of the patent is clear and beyond question. The issuance of letters patent, standing alone, is
not sufficient to support such drastic relief. In cases of infringement of patent no preliminary injunction
will be granted unless the patent is valid and infringed beyond question and the record conclusively
proves the defense is sham.

For failure to determine first the validity of the patents before aforesaid issuance of the writ, the
trial court failed to satisfy the two requisites necessary if an injunction is to issue, namely: the existence
of the right to be protected and the violation of said right.
Creser Precision Systems vs CA

FACTS:

Private respondent, FLORO INTERNATIONAL CORP., is a domestic corporation engaged in the


manufacture, production, distribution and sale of military armaments, munitions, airmunitions and
other similar materials.

January 23, 1990 - private respondent was granted by the Bureau of Patents, Trademarks and
Technology Transfer (BPTTT), a Letters Patent No. UM-6938 covering an aerial fuze which was published
in the September-October-1990, Vol. III, No. 5 issue of the Bureau of Patent's Official Gazette.

November 1993 - private respondent, through its president, Mr. Gregory Floro, Jr., discovered that
petitioner (CRESER PRECISION SYSTEMS, INC.) submitted samples of its patented aerial fuze to the
Armed Forces of the Philippines (AFP) for testing and learned that petitioner was claiming the aforesaid
aerial fuze as its own and planning to bid and manufacture the same commercially without license or
authority from private respondent.

December 3, 1993 - to protect its right, private respondent sent a letter to petitioner advising it of its
existing patent and its rights there under, warning petitioner of a possible court action and/or
application for injunction, should it proceed with the scheduled testing by the military.

December 8, 1993 - in response to private respondent's demand, petitioner filed a complaint for
injunction and damages

Allegations in the complaint of petitioner:

1. that petitioner is the first, true and actual inventor of an aerial fuze denominated as "Fuze, PDR
77 CB4" which it developed as early as December 1981 under the Self-Reliance Defense Posture
Program (SRDP) of the AFP;

2. that sometime in 1986, petitioner began supplying the AFP with the said aerial fuze;

3. that private respondent's aerial fuze is identical in every respect to the petitioner's fuze; and

4. that the only difference between the two fuzes are miniscule and merely cosmetic in nature.

Petitioner prayed that a temporary restraining order and/or writ of preliminary injunction be issued
enjoining private respondent including any and all persons acting on its behalf from manufacturing,
marketing and/or profiting there from, and/or from performing any other act in connection therewith or
tending to prejudice and deprive it of any rights, privileges and benefits to which it is duly entitled as the
first, true and actual inventor of the aerial fuze.

December 10, 1993 - the trial court issued a temporary restraining order and thereafter, hearings were
held.
December 27, 1993 - private respondent submitted its memorandum

Private respondent’s allegations:

1. that petitioner has no cause of action to file a complaint for infringement against it since it has
no patent for the aerial fuze which it claims to have invented;

2. that petitioner's available remedy is to file a petition for cancellation of patent before the
Bureau of Patents;

3. that private respondent as the patent holder cannot be stripped of its property right over the
patented aerial fuze consisting of the exclusive right to manufacture, use and sell the same; and

4. that it stands to suffer irreparable damage and injury if it is enjoined from the exercise of its
property rights over its patent.

December 29, 1993 - the trial court issued an Order granting the issuance of a writ of preliminary
injunction against private respondent

Private respondent moved for reconsideration but it was denied by the Trial Court.

June 27, 1994 - private respondent filed a petition for certiorari, mandamus and prohibition before
respondent Court of Appeals.

Grounds:

a. Petitioner has no cause of action for infringement against private respondent, the latter not having
any patent for the aerial fuze which it claims to have invented and developed and allegedly infringed by
private respondent; b. the case being an action for cancellation or invalidation of private respondent's
Letters Patent over its own aerial fuze, the proper venue is the Office of the Director of Patents;

c. The trial court acted in grave abuse of discretion and/or in excess of jurisdiction in finding that
petitioner has fully established its clear title or right to preliminary injunction;

d. The trial court acted in grave abuse of discretion and/or in excess of jurisdiction in granting the
preliminary injunction, it being disruptive of the status quo; and

e. The trial court acted in grave abuse of discretion and/or in excess of jurisdiction in granting the
preliminary injunction thereby depriving private respondent of its property rights over the patented
aerial fuze and cause it irreparable damages.

November 9, 1994 - the respondent court reversed the Trial Court's Order and dismissd the complaint
filed by petitioner
January 17, 1995 – Petitioner’s motion for reconsideration was also denied

Hence, this present petition.

ISSUES:

I. Whether or not the petitioner has the right to assail the validity of the patented work of the
respondent?

II. Whether or not the remedy of declaratory judgment or injunctive suit on patent invalidity relied
upon by petitioner can be likened to the civil action for infringement under Section 42 of the Patent
Law? What remedy should have the petitioner availed of?

HELD:

I. We find petitioner’s arguments untenable.

According to petitioner it can file, under Secection.76,42 IPCofthe Patent Law (R.A. 165),

Sec. 42. Civil action for infringement. — Any patentee, or anyone possessing any right, title or interest in
and to the patented invention, whose rights have been infringed, may bring a civil action before the
proper Court of First Instance (now Regional Trial court), to recover from the infringer damages
sustained by reason of the infringement and to secure an injunction for the protection of his right. . . .

an action for infringement not as a patentee but as an entity in possession of a right, title or interest in
and to the patented invention. It advances the theory that while the absence of a patent may prevent
one from lawfully suing another for infringement of said patent, such absence does not bar the first true
and actual inventor of the patented invention from suing another who was granted a patent in a suit for
declaratory or injunctive relief recognized under American patent laws. This remedy, petitioner points
out, may be likened to a civil action for infringement under Section 42 of the Philippine Patent Law.

Under the aforequoted law, only the patentee or his successors-in-interest may file an action for
infringement.

The phrase "anyone possessing any right, title or interest in and to the patented invention" upon which
petitioner maintains its present suit, refers only to the patentee's successors-in-interest, assignees or
grantees since actions for infringement of patent may be brought in the name of the person or persons
interested, whether as patentee, assignees, or as grantees, of the exclusive right. Moreover, there can
be no infringement of a patent until a patent has been issued, since whatever right one has to the
invention covered by the patent arises alone from the grant of patent.
In short, a person or entity who has not been granted letters patent over an invention and has not
acquired any right or title thereto either as assignee or as licensee, has no cause of action for
infringement because the right to maintain an infringement suit depends on the existence of the patent.

Petitioner admits it has no patent over its aerial fuze. Therefore, it has no legal basis or cause of action
to institute the petition for injunction and damages arising from the alleged infringement by private
respondent. While petitioner claims to be the first inventor of the aerial fuze, still it has no right of
property over the same upon which it can maintain a suit unless it obtains a patent therefor.

Under American jurisprudence, an inventor has no common-law right to a monopoly of his invention. He
has the right to make, use and vend his own invention, but if he voluntarily discloses it, such as by
offering it for sale, the world is free to copy and use it with impunity. A patent, however, gives the
inventor the right to exclude all others. As a patentee, he has the exclusive right of making, using or
selling the invention.

II. The remedy of declaratory judgment or injunctive suit on patent invalidity relied upon by
petitioner cannot be likened to the civil action for infringement under Section 42 of the Patent Law. The
reason for this is that the said remedy is available only to the patent holder or his successors-in-interest.
Thus, anyone who has no patent over an invention but claims to have a right or interest thereto can not
file an action for declaratory judgment or injunctive suit which is not recognized in this jurisdiction. Said
person, however, is not left without any remedy. He can, under Section 28 of the aforementioned law,
file a petition for cancellation of the patent within three (3) years from the publication of said patent
with the Director of Patents and raise as ground therefor that the person to whom the patent was
issued is not the true and actual inventor. Hence, petitioner's remedy is not to file an action for
injunction or infringement but to file a petition for cancellation of private respondent's patent.
Petitioner however failed to do so. As such, it can not now assail or impugn the validity of the private
respondent's letters patent by claiming that it is the true and actual inventor of the aerial fuze.

Thus, as correctlySec. 70,ruledIPby the respondent Court of Appeals in its assailed decision:
"sinceONEthepetitioner(1)year (private respondent herein) is the patentee of the disputed invention
embraced by letters of patent UM No. 6938 issued to it on January 23, 1990 by the Bureau of Patents, it
has in its favor not only the presumption of validity of its patent, but that of a legal and factual first and
true inventor of the invention."

In fine, in the absence of error or abuse of power or lack of jurisdiction or grave abuse of discretion, we
sustain the assailed decision of the respondent Court of Appeal.

WHEREFORE, the decision of the Court of Appeals is hereby AFFIRMED. No pronouncement as to costs.

SO ORDERED.
GODINES vs CA

Facts:

Respondent SV-Agro Industries acquired a letter patent issued to one Magdalena Villaruz which covers a
utility model for hand tractor or power tiller by virtue of a deed of assignment executed by the latter in
its favor. Respondent after suffering a decline in sales of the patented power tillers, investigated and
discovered that petitioner Godines was manufacturing the same power tillers as they have. Respondent
thus filed a complaint for patent infringement and unfair competition against petitioner Godines. The
trial court held petitioner liable for infringement. CA affirmed.

Issue:

Whether or not petitioner’s products infringe upon the patent of respondent SV-Agro.

Held: YES.

Tests have been established to determine infringement. These are (a) literal infringement; and (b) the
doctrine of equivalents. In using literal infringement as a test, “. . . resort must be had, in the first
instance, to the words of the claim. If accused matter clearly falls within the claim, infringement is made
out and that is the end of it.” To determine whether the particular item falls within the literal meaning
of the patent claims, the court must juxtapose the claims of the patent and the accused product within
the overall context of the claims and specifications, to determine whether there is exact identity of all
material elements. It appears from the observation of the trial court that these claims of the patent and
the features of the patented utility model were copied by petitioner: In appearance and form, both the
floating power tillers of the defendant and the turtle power tiller of the plaintiff are virtually the same.
Viewed from any perspective or angle, the power tiller of the defendant is identical and similar to that of
the turtle power tiller of plaintiff in form, configuration, design and appearance. The parts or
components thereof are virtually the same. In operation, the floating power tiller of the defendant
operates also in similar manner as the turtle power tiller of plaintiff.

Petitioner’s argument that his power tillers were different from private respondent’s is that of a
drowning man clutching at straws. Recognizing that the logical fallback position of one in the place of
defendant is to aver that his product is different from the patented one, courts have adopted the
doctrine of equivalents. Thus, according to this doctrine, “(a)n infringement also occurs when a device
appropriates a prior invention by incorporating its innovative concept and, albeit with some
modification and change, performs substantially the same function in substantially the same way to
achieve substantially the same result.” In this case, the trial court observed: But a careful examination
between the two power tillers will show that they will operate on the same fundamental principles.

We are compelled to arrive at no other conclusion but that there was infringement.
Del Rosario vs CA

Facts:

Roberto Del Rosario was granted a patent for his innovation called the “Minus One” karaoke. The patent
was issued in June 1988 for five years and was renewed in November 1991 for another five years as
there were improvement introduced to his “minus one” karaoke. In 1993, while the patent was still
effective, Del Rosario sued Janito Corporation, a Japanese company owned by Janito Cua, for allegedly
infringing upon the patent of Del Rosario. Del Rosario alleged that Janito was manufacturing a sing-along
system under the brand “miyata karaoke” which is substantially, if not identical, the same to his “minus
one” karaoke. The lower court ruled in favor of Del Rosario but the Court of Appeals ruled that there
was no infringement because the karaoke system was a universal product manufactured, advertised,
and marketed all over the world long before Del Rosario was issued his patents.

ISSUE: Whether or not the Court of Appeals erred in its ruling.

HELD: Yes. The Patent Law expressly acknowledges that any new model of implements or tools of any
industrial product even if not possessed of the quality of invention but which is of practical utility is
entitled to a patent for utility model. Here, there is no dispute that the letters patent issued to Del
Rosario are for utility models of audio equipment. It is elementary that a patent may be infringed where
the essential or substantial features of the patented invention are taken or appropriated, or the device,
machine or other subject matter alleged to infringe is substantially identical with the patented
invention. In order to infringe a patent, a machine or device must perform the same function, or
accomplish the same result by identical or substantially identical means and the principle or mode of
operation must be substantially the same. In the case at bar, miyata karaoke was proven to have
substantial if not identical functionality as that of the minus one karaoke which was covered by the
second patent issued to Del Rosario. Further, Janito failed to present competent evidence that will show
that Del Rosario’s innovation is not new.
TANADA VS. ANGARA

FACTS

The Philippines joined World Trade Organization as a founding member with the goal of
improving Philippine access to foreign markets, especially its major trading partners, through the
reduction of tariffs on its exports. The President also saw in the WTO the opening of new opportunities
for the services sector, the reduction of costs and uncertainty associated with exporting and the
attraction of more investments into the country. On April 15, 1994, respondent Navarro, then DTI
Secretary, signed in Marrakesh, Morocco, the Final Act Embodying the Results of the Uruguay Round of
Multilateral Negotiations. On December 14, 1994, the Senate concurred in the ratification of the
President of the Philippines of the Agreement Establishing the WTO which includes various agreements
and associated legal instruments. On December 16, 1994,the President signed the Instrument of
Ratification.

ISSUES

1. Whether the WTO Agreement violated the mandated economic nationalism by the Constitution

2. Whether the provisions of the WTO Agreement restricts and impairs Philippine sovereignty,
specifically the legislative power vested in the Congress

3. Whether the Senate concurrence in the WTO Agreement and its annexes but not in the other
documents referred to in the Final Act is defective and insufficient and thus constitutes abuse of
discretion

RULING

1. No. The Constitution did not intend to pursue an isolationist policy. It did not shut out foreign
investments, goods and services in the development of the Philippine economy. In fact, it allows an
exchange on the basis of equality and reciprocity, frowning only on foreign competition that is unfair.
The constitutional policy of a self-reliant and independent national economy does not necessarily rule
out the entry of foreign investments, goods and services. It contemplates neither economic seclusion
nor mendicancy in the international community.

2. No. While sovereignty has traditionally been deemed absolute and all-encompassing on the domestic
level, it is however subject to restrictions and limitations voluntarily agreed to by the Philippines,
expressly or impliedly, as a member of the family of nations. Unquestionably, the Constitution did not
envision a hermit-type isolation of the country from the rest of the world. By the doctrine of
incorporation, the country is bound by generally accepted principles of international law, which are
considered to be automatically part of our laws. A treaty engagement is not a mere moral obligation on
the parties. By their inherent nature, treaties really limit or restrict the absoluteness of sovereignty. The
Philippines has effectively agreed to limit the exercise of its sovereign powers of taxation, eminent
domain and police power. The underlying consideration in this partial sovereignty is the reciprocal
commitment of the other contracting states in granting the same privilege and immunities to the
Philippines, its officials and its citizens. The same reciprocity characterizes the same commitments under
WTO-GATT. The point is that a portion of sovereignty may be waived without violating the Constitution,
based on the rationale that the Philippines adopts the generally accepted principles of international law
as part of the law of the land and adheres to the policy of cooperation and amity with all nations.

3. No. The petitioners submit that concurrence in the WTO Agreement alone is flawed because it is in
effect a rejection of the Final Act. The Court held that a final act is an instrument which records the
winding up of the proceedings of a diplomatic conference and not the treaty itself. On the other hand,
the WTO Agreement itself expresses what multilateral agreements are deemed included as its integral
parts. It should be added that the Senate was well-aware of what it was concurring in as shown by the
member’s deliberation.
Savage vs Taypin

FACTS:

Petitioners Savage, seek to nullify the search warrant issued by respondent Judge Aproniano B.
Taypin of the Regional Trial Court, Br. 12 Cebu City, which resulted in the seizure of certain pieces of
wrought iron furniture from the factory of petitioners located in Biasong, Talisay, Cebu.

The complaint was lodged by private respondent Eric Ng Mendoza, president and general manager of
Mendco Development Corporation (MENDCO), alleging that Savage’s products are the object of unfair
competition involving design patents, punishable under Art. 189 of the Revised Penal Code as amended.
Savage contends however, that there was no existence of offense leading to the issuance of a search
warrant and eventual seizure of its products.

ISSUE: Whether or not unfair competition involving design patents are punishable under Article 189 of
the Revised Penal Code.

HELD: To provide a clear view, the Intellectual Property Code took effect on January 1, 1998. The
repealing clause of the IPC provides that Articles 188 and 189 of the Revised Penal Code (RPC),
Presidential Decree No. 49, are hereby repealed The issue involving the existence of "unfair
competition" as a felony involving design patents, referred to in Art. 189 of the Revised Penal Code, has
been rendered moot and academic by the repeal of the article. Hence, the search warrant cannot even
be issued by virtue of a possible violation of the IPR Code.

There is no mention of any crime of "unfair competition" involving design patents in the controlling
provisions on Unfair Competition of the RPC. It is therefore unclear whether the crime exists at all, for
the enactment of RA 8293 did not result in the reenactment of Art. 189 of the Revised Penal Code.

The court is prevented from applying these principles, along with the new provisions on Unfair
Competition found in the IPR Code, to the alleged acts of the petitioners, for such acts constitute patent
infringement as defined by the same Code

Although the case traces its origins to the year 1997 or before the enactment of the IPR Code, Article 22
of the Revised Penal Code provides that penal laws shall be applied retrospectively, if such application
would be beneficial to the accused. Since the IPR Code effectively obliterates the possibility of any
criminal liability attaching to the acts alleged, then RPC provisions must be applied.

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